Appeal No. 1997-3020
Application 08/149,101
No prior art has been relied upon by the examiner in the rejection of the claims
under appeal.
Claims 1 through 28 stand rejected under 35 U.S.C. § 112, first paragraph,
(enablement). We reverse.
DISCUSSION
1. Claims 1 through 11 and 27
The patent examiner bears the initial burden of providing reasons why a supporting
disclosure does not enable one skilled in the art to make and use a claimed invention. In
re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). The examiner’s
position concerning the enablement of the appealed claims is two-fold. First, the examiner
is of the opinion that it would require undue experimentation for one skilled in the art to
make the hybrid cytokines such that the hybrid cytokines possess a desired activity.
Second, the examiner is of the opinion that there is an unpredictability in the activity of any
one hybrid cytokine encompassed by the claims on appeal.
It is noted that the examiner has stated on the record that the specification is
enabling for hybrid cytokines having the conformation LLLI, LLLI", IIIL, IIIL", IIIG and IGGI
since specific examples are set forth in the specification concerning the manufacture and
use of these hybrid cytokines. However, the examiner is of the opinion that the
specification does not reasonably provide enablement for all of the hybrid cytokines
encompassed by claim 1.
3
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